Dr Martens Australia Pty Ltd v Rivers

V 304 OF 1999 BETWEEN: DR MARTENS AUSTRALIA PTY LTD

V 305 OF 1999 BETWEEN: DR MARTENS AUSTRALIA PTY LTD

BACKGROUND 1 The first appellant is the exclusive distributor and seller in Australia of Dr Martens footwear, including the Z welt footwear which is the subject of these appeals. We will shortly describe the features of the Z welt footwear. The second appellant is and has been since 1960 the manufacturer in England of Dr Martens footwear, including the Z welt footwear. The third and fourth appellants are the proprietors of certain trade marks, including "Dr Martens", which are exclusively licensed to the second appellant. The fifth appellant is the manufacturer in England of air cushioned soles for Dr Martens footwear, including the Z welt footwear. The fifth appellant sells the soles to the second appellant. 2 The appellants brought four proceedings in the Federal Court against different Australian manufacturers and distributors of footwear. The proceedings were heard together. For the most part, the evidence in each of the proceedings was evidence in all of them. The appellants succeeded against one group of respondents. That result has nothing to do with the present appeals. The appellants failed in their claims against the other three groups of respondents. The appellants have now brought appeals from the dismissal of those proceedings. 3 The issue in the proceedings arose out of the trade dress, get‑up, image and presentation of the Z welt footwear. Over the years, and particularly in the late 1980s and the 1990s, the Z welt footwear achieved very wide acceptance as a fashion item. The Z welt style or look is found in both boots and shoes. The Z welt style is said by the appellants to incorporate the following distinctive features: · a prominent and brightly coloured welt stitch thread of yellow or yellow/orange colour · the welt stitch thread being sewn in a large and visible looped stitch · a visible synthetic or plastic welt of black or dark brown colour · a partially transparent synthetic or plastic sole made from PVC having a light brown colour, a grooved sole edge and a two-tone effect in sole side view · an angled heel on the sole instep · a sole pattern being either the Dr Martens sole design (called the DMS sole) or a cleated sole design (called the BEN or Commando sole) · thick laces coloured black, yellow and black, or yellow and brown. Z welt footwear has not been known or identified by that name by the public. The trial judge used the name as a shorthand description of footwear possessing the so-called distinctive features relied on by the appellants. 4 The appellants alleged that the respondents had copied the trade dress and get‑up of particular Dr Martens Z welt footwear, and put imitation and look-alike Dr Martens products into the market. It was said that by so doing they had wrongfully appropriated the goodwill and reputation of the appellants in that trade dress and get‑up, and had engaged in passing off. It was also said that the respondents' conduct constituted misleading and deceptive conduct and false and misleading representations in contravention of ss 52, 53 and 55 of the Trade Practices Act 1974. TRIAL JUDGE'S FINDINGS 5 His Honour's dismissal of the appellants' cases was based on a series of findings he made about the branding and pricing of footwear. In paragraph 168 of his reasons he set out twenty‑three findings. They include the following findings that are especially relevant to the appeals:

· branding of footwear was important as identifying the source of manufacture in the footwear industry · footwear was commonly branded on the sock and the sole as well as on swing tags and boxes · purchasers handled footwear and looked at the sock and sole of footwear before making a purchase · purchasers usually if not inevitably looked at, and identified, the brand on footwear before making a purchase · purchasers were accustomed to distinguish products by reference to brand names and price · the price was commonly put on the sole of footwear and customers tended to look at the price on the sole · price was a distinguishing factor when a potential purchaser was considering whether a particular product was a genuine branded product or was an imitation or look‑alike of a different brand · purchasers were aware of the Dr Martens brand name · purchasers expected Dr Martens footwear to be English made footwear of a welted construction which was durable, comfortable and of good quality · when purchasers bought Dr Martens footwear they expected to see the name or mark Dr Martens on the footwear · young children and young adults [the typical purchasers] were brand conscious and in particular were well aware of the Dr Martens brand, although it was the image or appearance of the Z welt footwear which attracted them to it · there was a considerable quantity of Z welt imitations and look‑alikes in the market · purchasers, particularly young children and young adults, were alive to the existence of Z welt imitation and look‑alike products in the market · people purchased imitations or look‑alikes because they wanted to be seen to be wearing the image projected by the genuine Dr Martens product · it was common for potential purchasers to ask of a product - "Are these real Docs?" · a number of retailer witnesses had stocked and sold imitation or look‑alike footwear, including Rivers, Windsor Smith and Lipstik · if purchasers saw shoes with the marks "Rivers", "Windsor Smith", "Lipstik" or "ah! Soul" on them, they would think the footwear came from those sources and would not think it was Dr Martens footwear. 6 The trial judge concluded that by 1991 the use of the so-called distinctive features in combination and in association with the Dr Martens name, branding, markings and labelling had become distinctive of the appellants' footwear, and that this continued to be the case up to and after the commencement of the proceedings. Some of the distinctive features are more distinctive than others, in the sense that they are more readily recognised and identified as being associated with Dr Martens footwear. The principal distinctive feature is the yellow stitching on the welt. In his Honour's view the appellants' case failed to have sufficient regard to the nature and extent of the branding, markings and labelling on the Z welt footwear and those on the respondents' footwear. He concluded that although it might be possible to identify distinctive features in the Z welt footwear, they could not be looked at in isolation or in a vacuum, without reference to the branding, markings and labelling on the Z welt footwear and those on the respondents' footwear. 7 The trial judge also made findings about the get‑up of the respondents' shoes. The Figgins "ah! Soul" shoe displays that name clearly and distinctly on the sock. Between the words "ah!" and "Soul" appears a stylised naked figure, and underneath is written "made in Australia". The naked figure also appears, in yellow, on the instep of the sole. The Rivers "Liverpool Black" shoe clearly and distinctly displays the name "rivers" in conjunction with the Rivers logo and "THE AUSTRALIAN BRAND" on the sock, and the name "rivers" on the instep of the sole. The Bata "Danny" boot shows the name "JJ Lester & Co Ltd" on the sock together with the words "by Bata". The name "JJ Lester & Co Ltd" is impressed on the upper outside leg of the boot. The swing tag in the form of a map of Australia attached to the boot states "100% AUSTRALIAN MADE". 8 The trial judge found that by 1993 potential purchasers had become aware of the fact that Dr Martens look‑alike or imitation products were in the market. Potential purchasers were able to distinguish between the two classes by reference to branding, labelling and pricing. The swing tags on the Z welt footwear displayed the words "Genuine Dr Martens Air Ware" and the instep of the sole displayed the words "The Original", which also appeared on the sock of the footwear and elsewhere on the swing tag. The look‑alike products copied the look and style of a popular selling shoe. 9 There was no evidence before the trial judge of any incident or circumstance whereby a person purchased one of the respondents' products in the mistaken belief that it was a genuine Dr Martens product. There was also no evidence of any confusion between any of the respondents' products and genuine Dr Martens products in any shop or sale environment. Finally, there was no evidence to the effect that purchasers had asked for "Docs" or the genuine English manufactured footwear, but had in fact been given the footwear of one of the respondents. 10 In summing up his conclusions the trial judge said:

"Although the trade dress and get‑up of the 'ah! SOUL', 'Danny' and 'Liverpool Black' footwear is similar to the trade dress and get‑up of the Z welt footwear the consequence of the separate and distinctive branding and marking of the 'ah! SOUL', 'Danny' and 'Liverpool Black' footwear is that no misrepresentation has been made as to the trade source of the footwear being the trade source of the Dr Martens Z welt footwear or as to any sponsorship or approval of that trade source. Further I do not consider that a substantial or significant section of the public has been misled or deceived or is likely to be misled or deceived by the trade dress and get‑up of those three items of footwear when considered in conjunction and association with the branding, marking and labelling on the footwear, its price and having regard to the awareness of potential purchasers of the existence of look‑alikes or imitations in the market and their ability to recognise look‑alikes and imitations."

11 The appellants did not take us to any evidence with a view to persuading us that any of the findings set out in paragraph 5 should not have been made. With the aid of transcript references provided by the respondents we have made our own assessment of the evidence, and have concluded that all those findings, and the other findings in paragraph 168 of the trial judge's reasons, were properly made. The findings in paragraph 7 were not challenged. They simply record the result of the judge's inspection of the footwear, and accord with our own inspection.

Finding that distinctive features alone distinctive of appellants' footwear? 12 The appellants relied on detailed written submissions in addition to oral submissions. The notices of appeal in the three appeals are relevantly in identical terms. The first ground is as follows:

"The learned judge should have held that the trade dress of Dr Martens footwear is distinctive of Dr Martens whether or not accompanied by the words 'Dr Martens'." That ground appears to take issue with the conclusion of the trial judge that the reputation and identification of Z welt footwear by reference to its trade dress and get‑up comprising the so-called distinctive features had been acquired in conjunction with, and by reference to, the brand names and the branding, markings and labelling on the footwear. Although this ground was not abandoned, it was not put at the forefront of the argument. Rather it was said that the trial judge had in fact held as the ground asserts he should have held, and that the first ground of appeal had been included out of an abundance of caution. Accordingly we will deal first with the contention that the trial judge held that the trade dress of Dr Martens footwear is itself distinctive of Dr Martens, and we will return to the first ground if it proves necessary to do so. 13 The appellants' submissions were built on the premise that, in the absence of the respondents' brands on the respondents' footwear, the trial judge would have found for the appellants. The appellants contended that, by implication, his Honour had made a finding that the so‑called distinctive features had by themselves become distinctive of the appellants' footwear. It was then said that because of that finding, the onus lay upon the respondents to show that, by the use of another mark or marks, or by a price differential, the effect of the false representation that the respondents' footwear was that of the appellants was removed. We will first examine the premise on which the submission is based. 14 In support of the contention that the trial judge had impliedly made the relevant finding, the appellants pointed to three passages in his Honour's reasons. The first is as follows (paragraph 169):

"…it is true that the distinctive features relied upon by the applicants have initially attracted people to think that a product bearing the combination of the distinctive features either is or may be a genuine Dr Martens product. However, before potential purchasers have finally decided to purchase a product they have paid attention to, or looked at, the brand of the product."

"It followed said the applicants that reliance on what [one of the respondents] submitted was the negative aspect of branding (the absence of the Dr Martens brand on the respondents' footwear), flies in the face of the evidence of the distinctiveness of the applicants' trade dress. The applicantsalso said that reliance on the negative aspect of branding is illogical and contrary to ordinary experience. I would accept that submission if I was faced with the respondents substantially copying the Z welt get-up without any identifying brand. However it is quite a different situation where not only is the well known Dr Martens name and other indicia relied on by the applicantsnot used but there is a different and distinctive name and indicia used on the footwear by the respondents." (Emphasis added.)

"Accordingly, I am prepared to accept that a person who had never purchased any Z welt footwear and was confronted with footwear bearing the distinctive Z welt get-up might think initially on looking at the footwear and without referring to or considering branding or labelling that what he or she was seeing might be a 'Dr Martens' product. However, if it was one of the respondents' products then a different brand name would be identified with the product and in such circumstances… there would be no relevant misrepresentation. In such circumstances I do not consider that such potential purchaser or consumer, on seeing the brand, would think that he or she was purchasing a Dr Martens product. Such potential purchaser would see the brand name on the sock, the side of the boot (in the case of [one respondent]) and on the sole and would realise that it was not a genuine Dr Martens product or a product to which the appellations 'Docs', 'Doc Martens' or 'Dr Martens' applied, but was rather a product manufactured by a different manufacturer and trade source."

15 However, these three passages must be considered in the light of the balance of his Honour's reasons. He emphasised that looking at the so‑called distinctive features in the abstract was an arid exercise and quite artificial, and that although the Z welt footwear had achieved recognition in the market place by reference to the distinctive features, the identification and display of the marks "Doc Martens" and "AirWair" had been a substantial component of that recognition. His Honour found that those marks played such a prominent part in the display, marketing and sale of the Z welt footwear that the name or brand on the Z welt footwear was a significant factor in the minds of purchasers and potential purchasers. 16 We do not accept that the trial judge found, by implication, that the distinctive features were themselves distinctive of the appellants' footwear. In at least fifteen places in his reasons his Honour, in unmistakable language, found that the appellants' goodwill lay in the distinctive features in conjunction with the branding, markings and labelling on the footwear. The following examples will suffice: "… by 1991 and continuing up to and after the commencement of these proceedings the use of the combination of the distinctive features claimed by the applicants had in combination and in association with the Dr Martens name, branding, markings and labelling become distinctive of the applicants' footwear". (paragraph 83) "… although it may be possible to identify distinctive features in the Z welt footwear they cannot be looked at in isolation or in a vacuum, without reference to the branding, markings and labelling on the Z welt footwear and the branding on the respondents' footwear." (paragraph 85).

17 The trial judge drew attention to evidence given by Mr Shelton, the deputy chairman of the second appellant and the managing director of R Griggs Group Ltd, that Doc Martens' reputation in the Z welt footwear depended on "a combination of the brand and the look". That Mr Shelton should give evidence to this effect is not a matter for surprise, since one of the ways in which the appellants' case was pleaded was that "when appearing on footwear in Australia … the Distinctive Features in combination with one or more of the Scheduled Marks … indicate to the public and/or persons interested in purchasing footwear and/or persons in the footwear trade in Australia that such footwear … is connected or associated with the Z Welt Footwear."

The "Scheduled Marks" include "Doc's", "Dr Martens" in various forms, and the Geneva cross surrounded by the words "Dr Martens Air Cushion Sole". In view of the numerous occasions on which the trial judge stressed that the distinctive features could not be viewed in isolation from the branding, markings and labelling, we are unable to see in the passages relied on by the appellants an implicit finding that the distinctive features were themselves distinctive of the appellants' footwear. 18 Even if, contrary to our view, the trial judge did find that the distinctive features were themselves distinctive of the appellants' footwear, it would not avail them. On his Honour's findings he would necessarily have concluded that the respondents had discharged any onus that lay on them to show that their branding, markings and labelling removed the effect of the prima facie misrepresentation. On the view his Honour took there was no occasion to speak of onus. However, the respondents satisfied him that they had so branded, marked and labelled their footwear that any impression that a prospective purchaser may have had that the respondents' shoes might be Dr Martens footwear was removed before any sale took place. Trade dress distinctive without branding 19 Our conclusion on the preceding contention makes it necessary to deal with the appellants' cautionary fall back position. We were not taken to any part of the evidence with a view to persuading us that the trial judge's finding that it was an artificial and arid exercise to isolate the distinctive features from their accompanying branding, markings and labelling was wrong. However we were given numerous references to evidence which was said to establish that the reputation of the Dr Martens footwear lay in the distinctive features independently of the branding, markings and labelling. The evidence falls into a number of categories: (a) Twelve witnesses gave evidence to the effect that they associated Dr Martens branded footwear with its brand names or markings such as "Docs" or "Dr Martens" and the distinctive features, which they enumerated. (b) Seven witnesses said that although the branding, markings and labelling of the Dr Martens footwear was important, the "look" of the footwear was more important. Other witnesses were invited to swear affidavits containing that statement, but obviously declined to do so since the relevant paragraphs of essentially standard form affidavits are crossed out. (c) A few witnesses said that markings and the look were equally important. (d) One witness said that the appearance and not the brand was the significant feature in the selling process. (e) One witness said that the representation of the Dr Martens footwear was more attributable to the name than to the appearance. (f) One witness said the brand "Original Dr Martens" was the key selling point. (g) Several witnesses said that the yellow stitching was a feature or characteristic of Dr Martens shoes. (h) Some witnesses expressed the view that in the absence of the distinctive features the footwear would not have much sales appeal. 20 The evidence summarised in (a), (b), (c), (e) and (f) supports the trial judge's conclusion that the appellants' reputation lay in a combination of the branding and appearance of the footwear and did not lie in its appearance alone. The evidence summarised in (g) and (h) does not impugn the trial judge's conclusion. The evidence summarised in (d) is the sole support for the view that the appellants' reputation lay in the distinctive features independently of the branding, markings and labelling. The evidence relied on by the appellants would alone have justified the trial judge's conclusion that it was the conjunction of the features and the branding, markings and labelling that constituted the appellants' reputation. On the evidence as a whole, the conclusion is the more justified. We refer in this connection to the evidence supporting the eighth, tenth and eleventh findings set out in paragraph 5. 21 The appellants submitted that the trial judge's conclusion reflected a confusion between the way in which a reputation is built up and the consequences of that reputation. It was submitted that a reputation is necessarily built up in the so‑called distinctive features in association with the branding, markings and labelling, because the public has to be taught that the distinctive features signify Dr Martens products. But once the reputation is built up in that way it subsists in the distinctive features alone. The submission was put as if it were a statement of general principle, whereas what is involved is a question of fact. A finding adverse to the appellants on the factual issue does not mean that the trial judge has confused concepts which are logically distinct. Pre‑sale misrepresentation 22 The appellants contended that the trial judge should have held that the respondents' conduct in putting footwear with the so-called distinctive features into the market place amounted to a misrepresentation. It was said that by such conduct, potential purchasers were initially attracted to the products because they thought they were authorised or genuine Dr Martens footwear. It was said that once the respondents had made such a misrepresentation to all who saw the footwear, it was irrelevant that some persons whose interest was attracted to the footwear by the misrepresentation realised later, albeit prior to purchase, by reason of the respondents' labelling, that the respondents' footwear was not the appellants' footwear. 23 The starting point for this submission is a representation by the respondents deriving from their manufacture and distribution of footwear having the distinctive features but lacking the respondents' own branding, markings and labelling. That was not the representation the trial judge found the respondents had made. For that reason the pre‑sale submission must be rejected. But it has another difficulty. The fact situation to which this submission was directed was the display of a respondent's shoes on a shelf in a shop. Before examining the shoes the customer would notice some of the features associated with Dr Martens footwear - the yellow stitching for example ‑ and would be enticed thereby to examine them more closely. Although on that inspection the customer would realise the shoes were not Dr Martens, and would either leave the shop without making a purchase or purchase shoes the customer knew were not Dr Martens, this was irrelevant, because the earlier enticement constituted the false representation. In the course of argument this was described as the two step scenario. In our view it is unrealistic to divide up the transaction in this way. The only representation made was that constituted by the actual display that was made - shoes with their distinctive features, brands, markings, labelling and price. Acceptance of the appellants' contention would mean that a trader who displayed Meissen together with similar‑looking locally made porcelain in the same area of the shop would thereby falsely represent that the latter were Meissen so long as the customer was not sufficiently close to the goods to see the distinguishing brands and prices. 24 The appellants contended that the respondents' footwear, in the hands of retailers, was an "instrument of fraud". It enabled a retailer to "switch‑sell", that is to say, to sell an imitation or look‑alike as a Dr Martens shoe. There was no evidence of switch selling. Indeed the evidence was that there was no switch selling. Several retailers gave evidence that far from representing that the imitation or look‑alike was Dr Martens footwear, or had an association with Dr Martens, they explained to customers that the imitation or look‑alike shoes were not the original Dr Martens and were thus much cheaper. They engaged in this process in order to secure a sale. For example, Timothy Jackson, a retailer, dealing with a genuine Dr Martens shoe and a look‑alike at half the price, said: "let us say we are pursuing a pair of $150 Doc Martens and then the mother has the audacity to actually [ask] how much they are and is told $150 and says: not on your nelly, nelly. We're not going down that path, thank you very much. Why are they so expensive and we say they're the original ones … and they tend to be that way as we immediately bring out the other one and say: however, mum, your problem is solved because we have the knock off and that's only $79.95 and she says: that will do me, Charlie, that's what you're getting."

We agree with the trial judge that the use of colourful expressions such as "instrument of fraud" is not helpful, because it is still necessary to determine whether there has been a misrepresentation having regard to all the circumstances surrounding the respondents' footwear, including its branding and price structure. Point of sale misrepresentation 25 Building on the trial judge's finding in their favour that the respondents had deliberately set out to copy the trade dress or get‑up of the Dr Martens footwear, the appellants contended that the onus lay upon the respondents to show that, by the use of another mark or marks or by a price differential, the effect of the representation flowing from the copying was substantially removed, that is to say, that the branding, markings and labelling removed any likelihood of misleading or deceiving "all except an insignificant or insubstantial number" of the class of potential purchasers. It was then said that the trial judge had wrongly approached the case on the footing that all purchasers in the market for the respondents' footwear were brand and price conscious, and were aware of the existence in the market of imitation and look‑alike products. It was said that in coming to his conclusion that the branding, markings and labelling had removed the likelihood of potential purchasers being misled or deceived, the trial judge had overlooked three categories of persons in the relevant class, and that the respondents had failed to prove that the persons in these categories would have been sufficiently discriminating to have been disabused. The categories were:

· persons who, having first been attracted by the trade dress or get‑up of the respondents' footwear because it looked like "Docs" or "Doc Martens", thereafter saw the respondents' branding, markings and labelling but did not consider them to represent a different trade source · persons who were brand conscious as to trade dress or get‑up but less brand conscious to the presence of additional word brandings or markings, and thus were not alerted to the different trade source of the respondents' products · persons whose motivation was to purchase footwear with the appellants' distinctive trade dress or get‑up as "Docs" or "Doc Martens" but who may have been entirely unconcerned or not consciously aware of the significance of the additional word brandings or markings as a differentiation of trade source. 26 As with the preceding ground of appeal, this ground assumes a representation by the respondents deriving from their manufacture and distribution of footwear having the distinctive features but lacking the respondents' own branding, markings and labelling. The submission that the onus shifted to the respondents is based on a representation the trial judge found had not been made. But even accepting the starting point of the argument, it must fail. We have set out most of the trial judge's findings in paragraph 5. Of particular relevance in the present connection are the findings that · purchasers handled footwear and looked at the sock and sole of footwear before making a purchase · purchasers usually if not inevitably looked at, and identified, the brand on footwear before making a purchase · purchasers were accustomed to distinguish products by reference to brand names and price · when purchasers bought Dr Martens footwear they expected to see the name or mark Dr Martens on the footwear · if purchasers saw shoes with the marks "Rivers", "Windsor Smith", "Lipstik", or "ah! Soul" on them, they would think that the footwear came from those sources and would not think it was Dr Martens footwear. 27 The trial judge said:

"The evidence to which I have referred earlier in these reasons satisfies me that when potential purchasers of footwear of the type such as the Figgins, Bata and Rivers products, are considering the purchase of the footwear, their attention is drawn to the brand name shown on the footwear and it is displayed in such a manner as to be brought before, and to the mind of, the potential purchaser (paragraph 410)."

Then follows the passage we have set out in paragraph 10, where the trial judge said that because of the branding, markings and labelling on the respondents' footwear, the price differential and potential purchasers' awareness of the existence of imitations and look‑alikes, he did not consider that a "substantial or significant section of the public" was likely to be relevantly misled or deceived. His Honour continued:

"There was no evidence of any persons being misled or deceived and I do not consider that any persons were likely to have been misled or deceived. There was a sufficient range of trade and consumer witnesses called who assisted me in reaching the conclusions I have reached. I have had regard to that evidence for the purpose of assisting me to determine the probability of such misleading and deception having occurred or being likely to occur. I have reached the conclusions I have reached based on my own observations of the relevant footwear of the applicants and the respondents and having regard to the trade and consumer evidence (paragraph 413; the emphasis is ours).

I am fortified in this conclusion by the fact that the Z welt footwear is prominently branded and labelled 'Dr Martens' together with the other indicia to which I have referred and the fact that the price at which the respondents' footwear has been offered for sale and sold is substantially less than the price at which the Z welt footwear is offered for sale … (paragraph 414)."

28 There was evidence that some customers may not have paid much attention to branding, and that notwithstanding the respondents' branding, markings and labelling, some may have been influenced by the distinctive features, especially the yellow stitching, to think the respondents' footwear came from the same source as Dr Martens. But there was also a wealth of evidence to support the findings set out in paragraph 26. In particular there was much evidence that when customers saw the respondents' branded footwear they did not think they were purchasing Dr Martens footwear but footwear from the Rivers, Windsor Smith, Lipstik or ah! Soul source. The trial judge did not refer to the categories of customers the appellants asserted he had overlooked. But his Honour had read and heard the evidence, and plainly treated those who fell within these categories as insignificant or insubstantial in number. It is to be recalled that he said that because of the branding, markings and labelling of the respondents' footwear, the price differential and potential purchasers' awareness of the existence of imitations and look‑alikes, he did not consider that a "substantial or significant section of the public" was likely to be relevantly misled. 29 Understandably, the trial judge did not speak in terms of onus of proof because it is clear that the respondents satisfied him that the branding, markings and labelling of their footwear, the price differential and potential purchasers' awareness of the existence of imitations and look‑alikes, removed any likelihood of misleading or deceiving all except an insignificant or insubstantial number of the class of potential purchasers. 30 The appellants also submitted that when potential purchasers saw the distinctive features on footwear bearing the brands "ah! Soul", "Rivers" and "JJ Lester & Co Ltd", a not insubstantial number of them would have concluded that the wares had been put into the market place in association with or with the licence or approval of the appellants. In rejecting this submission the trial judge said:

"Because the concept of branding footwear is so much part of the identification and marketing of footwear I do not consider that consumers would conclude or draw an inference that look‑alike footwear is in some way licensed by the owner of a brand bearing similar trade dress where the brand on the look‑alike footwear is quite different from the brand on the similar trade dress. I am fortified in this conclusion when I put into the equation the proposition that potential purchasers, particularly in the market for Z welt footwear, were at the relevant times generally brand and price conscious and were alive to the existence and recognition of look‑alike and imitation footwear.

There is no evidence to support the proposition that potential purchasers would or might believe that the respondents' footwear was made under licence in circumstances where the well known brand 'Dr Martens' was not used in relation to the footwear. More particularly is this so when the brand name 'Dr Martens' is well known in an industry where branding is recognised as an identification of trade source."

31 There was some evidence of a general nature that supported the licence or association theory. Thus Randall Glennon, an Account Director for the Campaign Palace, a leading advertising agency, expressed the opinion that

"if 'competing brands' appeared on a product, the Australian public generally or purchasers in particular, would believe or assume that there was a licence or arrangement in place which enabled the products to be sold as so branded."

It is not clear what fact situation the witness had in mind, and his evidence would not have assisted the trial judge in determining the licence/association issue. 32 Wayne Burns, a director of a company specialising in the "stewardship, strategising, marketing and communication of brands", expressed the opinion that if the brand image of Dr Martens footwear appeared in conjunction with any of the respondents' well‑known brands, a portion of the Australian public would believe that a licence arrangement existed between the owners of the Dr Martens brand image and the relevant respondent. Mr Burns conceded in cross‑examination that he had no experience in the footwear industry, had carried out no research, and had conducted no surveys that would enable him to express an opinion about consumer perceptions in relation to the appellants' or the respondents' footwear. 33 Wolf Schladow, an importer of footwear, was familiar with the Dr Martens Z welt footwear. In his affidavit he said:

"If I see in any footwear the Distinctive Features incorporated, I assume that whomever is manufacturing or distributing such footwear must have been given the authority or right by Griggs, its subsidiaries or the 'Dr Martens' trade mark proprietors or is in fact copying the Z Welt Footwear made by Griggs."

It is to be noted that the witness does not refer to the present fact situation, where the distinctive features are accompanied by the brand, marks and labels of another manufacturer. The witness conceded in cross‑examination that he had no idea whether a customer's assumption would be the same as his own. He had not been shown samples of the respondents' footwear prior to swearing the affidavit. 34 A vendor of boxer shorts said he would assume that footwear with the distinctive features, though with a label other than Dr Martens, was merely an authorised reproduction of the original. In cross‑examination he agreed that if he saw shoes marked "Rivers" he would assume they were manufactured by Rivers. He was not aware of any occasion where Dr Martens had granted a licence to someone to manufacture shoes with the appearance of a Dr Martens shoe. He would expect that Dr Martens' name would appear on any footwear produced under licence. If a licensee wanted to convey to a consumer that the product it was selling was a genuine Dr Martens product, the licensee would put the Dr Martens name on the shoe. 35 A restaurateur who had bought Dr Martens shoes swore an affidavit in which he said he would expect shoes having the distinctive features to be Dr Martens or to be associated in some way with Dr Martens. The posited fact situation did not involve the presence of someone else's brand on the shoes. In cross‑examination he said he was aware of imitation and look‑alike Dr Martens footwear. If he saw an imitation Dr Martens shoe marked "Rivers" he would expect it to be a shoe manufactured by Rivers made to look like a genuine Dr Martens shoe. When he saw shoes labelled "Windsor Smith" he would assume they were made in Australia by Windsor Smith. 36 A clothing and footwear retailer who did not stock Dr Martens said he assumed that shoes having the distinctive features, though not labelled Dr Martens, were made and distributed with the consent or licence of Dr Martens. In cross‑examination he agreed that if he saw an imitation Dr Martens shoe with a Rivers brand, he would assume it was manufactured by Rivers and would not expect it to be a genuine Dr Martens shoe. He agreed that anyone who was making Dr Martens shoes under licence would advertise that they were so made. A licensee who was paying royalties to Dr Martens would want to convey to consumers that the shoes were being made under licence, and would do this by advertisement and by marking the shoes so as to disclose this. Shoes made by or connected with Dr Martens would thus bear some reference to Dr Martens. The witness said that a customer would distinguish between a genuine Dr Martens shoe and a look‑alike by the price and the markings on the shoes. The witness would not expect to see the brand Windsor Smith on a Dr Martens shoe. 37 The owner of a wholesale fashion business, who did not deal in footwear, said that if he saw footwear with the distinctive features, though with a label other than Dr Martens, he would assume there was some association between the distributor and Dr Martens. When it was put to him that it was customary for shoes made under licence to bear an endorsement to that effect, he said he was not very familiar with the practices of the footwear industry. He agreed that if he saw a shoe with the "Rivers" or "Windsor Smith" brand he would think it was a shoe manufactured by Rivers or Windsor Smith. He was not aware of any occasion on which the Dr Martens name and logo had not appeared on Dr Martens footwear. 38 The trial judge may have overstated the position when he said there was no evidence to support the licensing submission. It may have been more accurate to have said there was no useful evidence that potential purchasers would draw the conclusion for which the appellants contended. There was certainly no evidence that required him to depart from his own opinion that, for the reasons he gave, consumers would not conclude or draw an inference that look‑alike footwear was licensed by the owner of a brand bearing similar trade dress where a quite different brand appeared on the look‑alike footwear. We agree with his Honour's conclusion on the licensing/association submission. In our view the suggestion that the appellants would agree to Dr Martens footwear being labelled "ah! Soul", "Rivers" or "JJ Lester & Co Ltd", or that a potential purchaser would think they would, is fanciful. We do not think that in the relevant market any person would conclude that there was a licence or association of the type suggested. The suggestion is even more bizarre in relation to the "Rivers" and "JJ Lester & Co Ltd" labels. It is to be recalled that the words on the sock of the Bata shoe are "JJ Lester & Co Ltd by Bata". "Rivers" and "Bata" are well known Australian brands of footwear. Why would a potential purchaser of footwear labelled "Rivers" or "Bata" conclude that the footwear was in fact that of a rival trader? The submission is unsupported by any cogent evidence, and is at odds with the trial judge's finding that purchasers of Doc Martens footwear expect to see the name or mark "Dr Martens" on the footwear. The appellants did not contend that this finding was unsupported by the evidence, and our own examination of the evidence discloses that the finding is amply justified. Post‑sale misrepresentation 39 The appellants submitted that by putting out footwear in the trade dress of Dr Martens footwear the respondents enabled people who purchased the respondents' footwear to give the false impression that they were wearing the genuine Dr Martens footwear. Again, the starting point for this submission is a representation by the respondents consisting of their display of footwear having the distinctive features but lacking the respondents' own branding, markings and labelling. That was not the representation the trial judge found, correctly in our view, that the respondents had made. But there is another difficulty in the appellants' path. The appellants do not claim originality in the individual distinctive features but rather in the combination of all the distinctive features as an indication of trade source. The fact situation to which this submission is directed is the purchaser of imitation or look‑alike shoes walking down the street in the shoes thus causing others to think the purchaser is wearing Dr Martens shoes. In this situation any representation made by the wearing of the shoes does not consist in the display of all the distinctive features, but only some of them. The viewer will not see the angled heel on the sole instep, the sole of the shoes or the sole pattern. The appellants submitted that the process of someone being misled or deceived need not occur whilst the relevant goods are in trade or commerce, since it is the respondents' conduct, not the deception, which must be in trade or commerce. Accepting this to be so, the only conduct on the part of the respondents which is in trade or commerce is the display of the footwear for the purposes of sale and the subsequent sale. If that does not involve any misrepresentation, then the respondents have not engaged in conduct in trade or commerce which is misleading or deceptive. Parkdale v Puxu 40 The trial judge took Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1981) 149 CLR 191 to establish that a manufacturer who copies the trade dress or get‑up of another's goods, but who affixes to them a distinctive and clear brand or label of its own, does not contravene ss 52, 53 or 55 of the Trade Practices Act or engage in passing off. The appellants argued that his Honour was in error, and that Puxu was not authority for that proposition. It was said that Puxu was concerned with substantial copying of the goods themselves, and that a distinction should be drawn between the copying of design and the copying of trade dress or get-up. Puxu was a design case and the present cases involved trade dress and get‑up. In our view this submission is not well‑founded. Of the majority justices in Puxu, only Brennan J distinguished between copying design and copying get‑up, and the way in which he drew the distinction does not support the appellants' argument. His Honour said (at 222):

"a distinction is drawn between the get-up of goods and the copying of the actual goods. Similarity in get-up may evidence passing off, but (statutory monopoly apart) all are free to copy the goods themselves."

The point his Honour was making is that copying of design by itself can never amount to misleading and deceptive conduct. This is confirmed at 225, where he said:

"A later manufacturer who does no more than exercise his freedom to manufacture and sell goods made in accordance with a design in the public domain does not mislead or deceive; and if a consumer has an erroneous preconceived belief that the first manufacturer has a monopoly, a false assumption by the consumer as to the source of the later manufacturer's goods is self‑induced."

Thus in his Honour's view, misleading and deceptive conduct can only arise where, in addition to the copying of the design, the get-up of the product is such that it may be mistaken for the product of another trader. It is therefore only in the context of get-up that the question of misleading and deceptive conduct really arises, and it is in this context that his Honour concluded that the labelling on the chairs was sufficient to prevent misleading or deceptive conduct. His Honour said (at 225‑226):

"where Parkdale labelled the "Rawhide" suite in accordance with the practice of the trade and the label clearly distinguished that suite from the "Contour" suite, there was no misleading or deceptive get-up".

There is thus nothing in his Honour's judgment to suggest that the principles of Puxu would not apply to cases which concern only copying of get-up. 41 In any event, we cannot see any logical basis in principle for the distinction between copying design and copying get-up, although if it is get‑up which is copied, it may be more difficult to persuade a court, as a matter of fact, that the two products are otherwise sufficiently distinguished. If the appellants in Puxu could copy the respondents' chairs provided they labelled them so that it was clear they were not the goods of the respondents, we can see no reason why the appellants cannot do the same with their footwear. Further, the distinction proposed by the appellants is an unattractive one, as it is often difficult to distinguish between design features and get-up. Many, if not all, of the features in the present case which are said to be get‑up could be considered design features. In Puxu it was accepted that features such as the cushions on the chairs, the pattern of patchwork leather which covered the cushions and the use of three colours of leather patches in the pattern, were design features. It is difficult to see why these should be design features, but the sole, angled heel and other features of Dr Martens boots should constitute get‑up. 42 A similar argument directed towards narrowing the ambit of Puxu was rejected by Lehane J in Philips Electronics NV v Remington Products Australia Pty Ltd (1997) 39 IPR 283 at 294 and 296. CONCLUSION 43 At first instance the cases were spread over thirty‑two days. Evidence was taken from seventy‑six witnesses, sixty‑six of whom were cross‑examined. A great deal of expert evidence was taken from those in the footwear trade. In these circumstances the trial judge was in an especially advantageous position to determine the factual issues the proceedings presented, and to evaluate the significance of his findings to the ultimate questions for decision. We have given weight to that fact. See generally Guide Dogs Owners' and Friends' Association Inc v Guide Dog Association (1999) 43 IPR 531 and 540 and S & I Publishing Pty Ltd v Australian Security Life Saver Pty Ltd (1998) 43 IPR 581 at 587. But, as we have said elsewhere, we have made our own examination of the evidence, including a comparison of the items of footwear that were in evidence. We are of the view that the trial judge's findings were soundly based, and we agree with the conclusions he reached on the basis of those findings.

44 Lord Lindley's observation in Schweppes Ltd v Gibbens (1905) 22 RPC 601 at 607 is applicable to the present cases. His Lordship said: "It appears to me that the real answer to the appellants' case is this - that they invite your Lordships to look, not at the whole get‑up, but at that part of the get‑up which suits their case. The resemblances here are obvious enough, but, unfortunately for the appellants, so are the differences. The differences are not concealed; they are quite as conspicuous as the resemblances. If you look at the whole get‑up, and not only at that part of it in which the resemblances are to be found, the whole get‑up does not deceive." In that case Schweppes had for many years marked its soda water bottles with a brown label with a red disc in the centre. The labels had "Schweppes' Soda Water" printed on them. Gibbens then entered the market with a brown label and a red disc similar to the Schweppes label. Gibbens' label contained the words "Gibbens Soda Water". At first instance, before the Court of Appeal and in the House of Lords Schweppes failed in its claim that Gibbens had passed off his goods as Schweppes'. Lord Halsbury LC called the ultimate appeal a "bold endeavour". 45 In the course of argument we were referred to many authorities on passing off and misleading and deceptive conduct. Save as to the ambit of Puxu the trial judge's exposition of the law relating to those causes of action was not challenged, and accordingly we have not burdened these reasons with our own examination of the law.

I certify that the preceding forty-six (46) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Sundberg, the Honourable Justice Emmett and the Honourable Justice Hely

Associate: Dated: 26 November 1999 Counsel for the Appellants: Dr J McL Emmerson QC, Mr B Hess and Dr L J Duncan

Solicitors for the Appellants: Deacons Graham & James

Counsel for the first and third Respondents: Dr C L Pannam QC and Mr B N Caine

Solicitors for the first and third Respondents: Freehill Hollingdale & Page; McKean & Park

Counsel for the second Respondent: Mr G H Garde QC and Mr M Roberts

Solicitors for the second Respondent: Beckwith Cleverdon Rees

Date of Hearing: 8 - 11 November 1999